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UMass Files Appeal over Rejection of Its RNAi IP Litigation Dismissal Request

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Roughly one week after a US District Court rejected the efforts of University of Massachusetts officials to have an intellectual property lawsuit filed against them dismissed, the UMass defendants have filed an appeal with a federal court to re-examine the issue.

The case centers around a portfolio of patents and patent applications, known as the Tuschl-II family, covering conventional 21- to 23-nucleotide-long siRNAs with 3' overhangs. The listed inventors of the IP are former Max Planck researcher Thomas Tuschl, UMass' Phillip Zamore, as well as Massachusetts Institute of Technology researchers Phillip Sharp and David Bartel — all of whom are Alnylam Pharmaceuticals co-founders.

In early 2011, the University of Utah sued the institutions, as well as Alnylam, for failing to list one of its researchers, Brenda Bass, as a co-inventor of the IP (GSN 3/31/2011).

As part of its legal defense, UMass had argued that since both it and the University of Utah are state institutions, they should be considered US states, which would make the Supreme Court the only venue where the litigation could be heard (GSN 11/3/2011).

Instead of pressing the issue, the University of Utah dropped UMass as a defendant, and later amended its suit to name several top UMass officials as defendants (GSN 12/6/2011 & 5/17/2012). They include UMass President Robert Caret; UMass COO James Julian; David Gray, the university's senior vice president for administration, finance, and technology; and James McNamara, executive director of UMass' office of technology management.

Taking aim at this gambit, UMass argued that it is an “indispensable party” to the litigation, and that the case should not be allowed to proceed without its inclusion.

As reported earlier this month by Gene Silencing News, the district court hearing the case rejected UMass' request for dismissal, stating that the case against the school officials does not “uniquely implicate sovereign interests,” and therefore may proceed (GSN 6/14/2012).

“Unlike disputes over lakes, rivers, and state boundaries, a quarrel over patent rights does not implicate core sovereign interests,” it added. “Accordingly, this court has jurisdiction over the action against the UMass state officials.”

Last week, however, the UMass defendants told the district court that they have filed an appeal with the United States Court of Appeals for the Federal Circuit in a bid to overturn the rejection of their dismissal request.

According to the defendants, while such appeals are generally limited to “final decisions of the district courts,” an exception exists for cases where an “interlocutory order has a final and irreparable effect on the rights of the parties” that are “too important to be denied review and too independent of the cause itself” to be denied “appellate consideration … until the whole case is adjudicated.”

Unfairly Prejudiced

In making its argument against the University of Utah's suit, UMass originally argued that the plaintiff erred in filing its suit in a federal court, which it said is not empowered to hear litigation between US states, and that certain state institutions are considered states under previously decided law.

“The Supreme Court has held that a state university is treated as the state itself for purposes of [its] original and exclusive jurisdiction over controversies between states,” UMass said late last year. Moreover, both institutions have specifically been treated as such in a number of other court decisions.

“Because the University of Utah's claims against UMass are claims of one state against another, the Supreme Court is the only court in which these claims can be heard,” UMass noted. At the same time, “as an instrumentality of the Commonwealth of Massachusetts, UMass enjoys the Commonwealth's immunity from suit in a federal court.”

Rather than deal with this argument head on, the University of Utah replaced UMass with several of its officials as defendants in the lawsuit, arguing that the change meant that the case was no longer an “action between two states for the simple reason that none of the … defendants is a state or an arm of a state.”

And while UMass asserted that it was an “indispensable party” to the litigation, and therefore the case could not proceed without it, the district court sided with the University of Utah that the suit could proceed without unfairly prejudicing UMass.

The school officials listed as defendants have “the authority, ability, and obligation in their official capacities to control UMass and protect its interests,” the University of Utah said. “To argue otherwise would be ludicrous. If UMass was joined as a defendant [in the case], one or more of the UMass officials who are presently defendants would likely be its corporate representative, and thus would be involved in all tactical and strategic decisions on UMass' behalf.”

Earlier this month, the district court agreed, noting that all of the defendants are represented by “the same counsel, one of the leading IP law firms in the United States, and there is no apparent conflict of interest.” At the same time, it is unclear whether the Supreme Court would even have jurisdiction over the other parties in the case even if it went before that court.

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